DC v SU

[Toga]

I think people may be looking at this a bit backwards. SU is looking to block DC from acquiring a trademark on 44. Does that mean we think DC has a right to OWN the number? Should he be able to sue SU or other entities for trademark infringement if they use it in marketing? What am I missing?

 

[HOFCeluck]

What gives SU the right?

 

[IthacaMatt]

People are misunderstanding all sorts of things in this podcast.

First of all, Coleman has 2 applications.

One if for "44's" - NOT the number 44 itself. That's a big point. He WAS a "44", and I think he would win a suit over using it for the name of a restaurant or bar that he owns. That is his number. He didn't only wear it as SU.

The other one, "My SU Life", is probably the name of a book (presumably an autobiography). He played for SU, it's a fact. He is a public figure. I don't think they can prevent him from saying he once played for SU in the title of his book, any more than the Lions could stop George Plimpton from calling his book "Paper Lion".

 

[Jake]

Changing the zip code to 13244 is one of several pieces of evidence the University will or does use.

I would assume DC will point to his jersey with his name on it in the rafters.

 

[MadNY3]

I would assume DC will point to his jersey with his name on it in the rafters.

And the University will point to how the number has had significance before he arrived on campus.

 

[IthacaMatt]

I think people may be looking at this a bit backwards. SU is looking to block DC from acquiring a trademark on 44. Does that mean we think DC has a right to OWN the number? Should he be able to sue SU or other entities for trademark infringement if they use it in marketing? What am I missing?

Another thing that people misunderstand about trademarks - including George McGuire. A TM is not really intended to be a "sword" to kill all competitors and put them out of business. It's better understood as a shield, to protect your legitimate business interest.

The test that is applied to ALL alleged TM infringements or violations is whether there is a likelihood of confusion as to the source of the goods or services, or whether the use is insinuating an implied endorsement.

If DC is seeking use of "44's" for the name of a restaurant or bar, then to me, there is no likelihood of confusion that Syracuse University is operating the establishment, or even an investor in it. DC wins this case.

"My SU Life" - again, he's a public figure, it's a factual statement, he was newsworthy, and I don't think they can censor that he went to SU out of the name of the book any more than they could sensor all references to SU made inside it.

 

[IthacaMatt]

And the University will point to how the number has had significance before he arrived on campus.

They have an interest in protecting their own use.

They have a much less compelling interest in preventing the use of factual representations underlying someone else's use, let alone quashing their free speech rights.

Case law favors those who use TM as a shield, to protect their own marks. Case law is not so favorable to those who seek to use a mark to limit speech, rather than protect their own brand.

You cannot copyright a fact, for instance. You can't copyright the number 44 for the purpose of taking it out of commerce. You can't copyright ideas. Because people may need to use those facts for purposes of further study, social or other types of commentary, or just as fair use, to describe something that happened in the news, or to a pubic figure.

Now, of course copyrights and trademarks are not the same thing, but I'm trying to make a point with the comparison. As someone who has litigated numerous trademark disputes, in state and federal court, as well as before the USPTO Trademark Trials & Appeals Board, including against 2 national sporting goods companies, this "shield vs. sword" distinction is important, just from an equity perspective. What is fair?

Bond Schoeneck doesn't give a shtt about that because they don't make any money being reasonable, or actually following the spirit of the law. They have a client at SU in their marketing department who is cowed by McGuire's 25 years representing SU, while the marketing person probably hasn't been an SU employee (certainly not one making branding decisions for the University) for maybe a quarter of that time. The lawyer becomes the expert, and the client does what they are told.

This is how these things make the news, generating bad press for the university.

 

[MadNY3]

They have an interest in protecting their own use.

They have a much less compelling interest in preventing the use of factual representations underlying someone else's use, let alone quashing their free speech rights.

Case law favors those who use TM as a shield, to protect their own marks. Case law is not so favorable to those who seek to use a mark to limit speech, rather than protect their own brand.

You cannot copyright a fact, for instance. You can't copyright the number 44 for the purpose of taking it out of commerce. You can't copyright ideas. Because people may need to use those facts for purposes of further study, social or other types of commentary, or just as fair use, to describe something that happened in the news, or to a pubic figure.

Now, of course copyrights and trademarks are not the same thing, but I'm trying to make a point with the comparison. As someone who has litigated numerous trademark disputes, in state and federal court, as well as before the USPTO Trademark Trials & Appeals Board, including against 2 national sporting goods companies, this "shield vs. sword" distinction is important, just from an equity perspective. What is fair?

Bond Schoeneck doesn't give a shtt about that because they don't make any money being reasonable, or actually following the spirit of the law. They have a client at SU in their marketing department who is cowed by McGuire's 25 years representing SU, while the marketing person probably hasn't been an SU employee (certainly not one making branding decisions for the University) for maybe a quarter of that time. The lawyer becomes the expert, and the client does what they are told.

This is how these things make the news, generating bad press for the university.

That’s super helpful. You know a lot here.

The only thing that doesn’t fully track is the extension of time requests, unless said recommendations were “the person filing will give up.”

It almost seems this stayed at very low levels.

 

[IthacaMatt]

That’s super helpful. You know a lot here.

The only thing that doesn’t fully track is the extension of time requests, unless said recommendations were “the person filing will give up.”

It almost seems this stayed at very low levels.

I haven't looked at what's been filed, but I've had cases against them where they use the extensions to make someone spend more money, you have to hire a lawyer to appear in and file an answer in response to their TM opposition papers. They will make discovery demands, which creates more legal fees for the applicant, who is usually just trying to start some business venture (like those vodka guys. and that girl with the clothing line - who now happens to be Editor In Chief at Fortune) They get a chance to bleed you, and to come up with new facts (sometimes manufactured).

 

[IthacaMatt]

Who's to say that DC, as a famous 44 (like Wallace, or the football Gods) doesn't have "secondary meaning" in the number 44 himself, for his own fame for wearing the number? He was a number 1 draft pick, Rookie of the Year, and played on the Dream Team.

Does SU even having a federally registered trademark in the number foreclose anyone's rights to use the number? Secondary use provisions of trademark law would say "no".

Sorry, secondary meaning, not secondary use.

 

[kingtidge]

 

[tbonezone]

rob konrad had a bar called 44's no ?

 

[joct]

rob konrad had a bar called 44's no ?

I think it was 44's in the early 90s, then he bought it and called it Konrad's. But it does raise the same question, the bar was named 44's at one point.

 

[Cuse99&01]

I think it was 44's in the early 90s, then he bought it and called it Konrad's. But it does raise the same question, the bar was named 44's at one point.

It was definitely called 44’s when I was there in mid-late 90s

 

[outoftownie]

rob konrad had a bar called 44's no ?

Mark Albert owned 44s in the 90s. I think i spent 23 straight nights there my sophomore year. My roommate was one of the bartenders and i had a handful of friends that worked there over the years. I am not sure if he sold it, or Konrads was opened in the same location in early 2000s. Konrads was owned by a guy that went by Trooper John and a hand full of other investors including Rob Konrad.

 

[kcsu]

Hopefully they can figure something out to protect SU and allow DC to move forward

 

[4evaOrange]

"I HAD A LITTLE TEAR IN MY EYE" SHAQ ON THE TIME HE GOT DUNKED ON BY DERRICK COLEMAN #nba #shorts

Shaquille O'Neal made quite the name for himself over the years as a low post juggernaut who was not to be reckoned with. Early in his playing days against t...

youtube.com